UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`ASML Netherlands B.V., ASML US Inc., Excelitas Technologies Corp., and
`Qioptiq Photonics GmbH & Co. KG,
`Petitioners
`
`v.
`
`Energetiq Technology, Inc.,
`Patent Owner.
`
`Case IPR2016-00689
`
`
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 8,969,841
`CLAIMS 11, 12, and 27-29
`
`ASML 1303
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`Page
`
`V. 
`
`BACKGROUND ............................................................................................. 1 
`I. 
`LEGAL PRINCIPLES ..................................................................................... 7 
`II. 
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`III. 
`IV.  OVERVIEW OF THE ’841 PATENT .......................................................... 10 
`A. 
`Summary of the Prosecution History .................................................. 12 
`CLAIM CONSTRUCTION .......................................................................... 15 
`A. 
`“Light source” ..................................................................................... 15 
`B. 
`“Laser Driven Light Source” ............................................................... 18 
`C. 
`“Light Bulb” ........................................................................................ 19 
`D. 
`“Substantially continuous laser” ......................................................... 19 
`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 20 
`A. 
`Laser Sustained Plasma Light Sources Were Known Long
`Before the Priority Date of the ’841 Patent ......................................... 20 
`Sustaining a plasma with a laser at various wavelengths,
`including those up to about 2000 nm, was well known in the art ....... 21 
`VII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 34 
`A.  Ground 1: Claims 11, 12, and 27-29 Are Unpatentable Over
`Gärtner in View of Mourou and Silfvast ............................................. 34 
`1. 
`Independent Claim 10 .................................................................. 35 
`2.  Dependent Claims ........................................................................ 56 
`Ground 2: Claims 11, 12, and 27-29 Are Unpatentable Over
`Gärtner in View of Kensuke and Silfvast ........................................... 60 
`1. 
`Independent Claim 10 .................................................................. 61 
`2.  Dependent Claims ........................................................................ 71 
`VIII.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER
`REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............ 73 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 75 
`X. 
`RIGHT TO SUPPLEMENT .......................................................................... 75 
`XI. 
`JURAT ........................................................................................................... 76 
`
`B. 
`
`B. 
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`i
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`

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`I, J. Gary Eden, Ph.D., declare as follows:
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`1.
`
`My name is J. Gary Eden.
`
`I.
`
`BACKGROUND
`2.
`
`I am the Gilmore Family Professor of Electrical and Computer
`
`Engineering and Director of the Laboratory for Optical Physics and Engineering at
`
`the University of Illinois in Urbana, Illinois.
`
`3.
`
`I received a B.S. in Electrical Engineering (High Honors) from the
`
`University of Maryland, College Park in 1972 and an M.S. and Ph.D. in Electrical
`
`Engineering from the University of Illinois in 1973 and 1976, respectively.
`
`4.
`
`After receiving my doctorate, I served as a National Research Council
`
`Postdoctoral Research Associate at the United States Naval Research Laboratory
`
`(“NRL”), Optical Sciences Division, in Washington, DC from 1975 to 1976. As a
`
`research physicist in the Laser Physics Branch (Optical Sciences Division) from
`
`1976 to 1979, I made several contributions to the visible and ultraviolet lasers and
`
`laser spectroscopy field, including the co-discovery of the KrCl rare gas-halide
`
`excimer laser and the proton beam pumped laser (Ar-N2, XeF). In 1979, I received
`
`a Research Publication Award for this work at the NRL.
`
`5.
`
`In 1979, I was appointed assistant professor in the Department of
`
`Electrical and Computer Engineering at the University of Illinois. In 1981, I
`
`became associate professor in this same department, and in 1983, I became
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`professor in this department. In 1995, I was named the Director of the Laboratory
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`for Optical Physics and Engineering, and in 2007, I was named the Gilmore Family
`
`Professor of Electrical and Computer Engineering. I continue to hold both
`
`positions today. In addition, I am also Research Professor in the Coordinated
`
`Science Laboratory and the Micro and Nanotechnology Laboratory, and I hold
`
`academic appointments at the University of Illinois in the Departments of
`
`Materials Science and Engineering, Bioengineering, and Nuclear, Plasma, and
`
`Radiological Engineering.
`
`6.
`
`Since joining the faculty of the University of Illinois in 1979, I have
`
`been engaged in research in atomic, molecular and ultrafast laser spectroscopy, the
`
`discovery and development of visible and ultraviolet lasers, and the science and
`
`technology of microcavity plasma devices. My research has been featured in Laser
`
`Focus, Photonics Spectra, Electronics Weekly (UK), the Bulletin of the Materials
`
`Research Society, Microwaves, Optical Spectra, Electro-Optical Systems Design,
`
`Optics and Laser Technology, Electronics, Optics News, Lasers and Optronics,
`
`IEEE Potentials, IEEE Spectrum, and IEEE Circuits and Devices. My work was
`
`also highlighted in the National Academy of Sciences report Plasma 2010,
`
`published in 2007.
`
`7.
`
`I have made several major contributions to the field of laser physics,
`
`plasma physics, and atomic and molecular physics. I co-invented a new form of
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`2
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`lighting, “light tiles”, that are thin and flat. This culminated in the formation of a
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`company known as Eden Park Illumination. I discovered numerous ultraviolet,
`
`visible and near-infrared atomic and molecular lasers, including the KrCl
`
`ultraviolet (excimer) laser, the optically-pumped XeF, HgCl, and rare gas lasers
`
`and the CdI, CdBr, ZnI, Li, Fe, and Cd visible and near-infrared lasers. I
`
`demonstrated the first long pulse (> 1 µs) excimer laser and the first lasers (Ar –
`
`N2, XeF) pumped by a proton beam. The excimer lasers are now used worldwide
`
`in photolithography, surgical procedures (such as corneal refractive correction) and
`
`micromachining of materials. I discovered the laser excitation spectroscopy of
`
`photoassociation (the absorption of optical radiation by free atomic pairs) of
`
`thermal atoms as a probe of the structure of transient molecules. I demonstrated
`
`with my graduate students the first ultraviolet and violet glass fiber lasers. I
`
`discovered the excimer-pumped atomic lasers (lasing on the D1 and D2 lines of
`
`Na, Cs, and Rb) for laser guide stars and mesosphere probing by LIDAR. I
`
`conducted the first observation (by laser spectroscopy) of Rydberg series for the
`
`rare gas diatomics (Ne2, Ar2, Kr2, Xe2) and the first measurement of the rotational
`
`constants for Ne2 and Ar2, as well as the vibrational constants for Ne2+. I
`
`pioneered the development of microcavity plasma devices and arrays in silicon,
`
`Al/Al2O3, glass, ceramics, and multilayer metal/polymer structures. For this, I was
`
`the recipient of the C.E.K. Mees Award from the Optical Society of America, the
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`Aaron Kressel Award from the Photonics Society of the IEEE, and the Harold E.
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`Edgerton Award from the International Society for Optical Engineering. I was the
`
`Fulbright-Israel Distinguished Chair in the Physical Sciences and Engineering
`
`from 2007 to 2008. I am a Fellow of the American Physical Society, the Optical
`
`Society of America, the Institute of Electrical and Electronics Engineers, the
`
`American Association for the Advancement of Science (AAAS), and the SPIE
`
`(International Society for Optical Engineering).
`
`8.
`
`I taught/teach courses in laser physics, electromagnetics (including
`
`optics, optical waveguides, antennas), plasma physics, semiconductor electronic
`
`devices, electromagnetics, and analog signal processing, among others. I have
`
`directed the dissertations of 47 individuals who received the Ph.D. degree in
`
`Physics, Electrical and Computer Engineering, or Materials Science and
`
`Engineering.
`
`9.
`
`I have also served as Assistant Dean in the College of Engineering,
`
`Associate Dean of the Graduate College, and Associate Vice-Chancellor for
`
`Research.
`
`10.
`
`I have authored or co-authored over 290 peer-reviewed academic
`
`publications in the fields of laser physics, plasma physics, atomic and molecular
`
`physics, quantum electronics. I have served as Editor-in-Chief of the IEEE Journal
`
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`of Quantum Electronics, and Editor-in-Chief of Progress in Quantum Electronics. I
`
`am currently serving as an Associate Editor of Applied Physics Reviews.
`
`11.
`
`I am currently a member of four honorary organizations. In 1998, I
`
`served as President of the IEEE Lasers and Electro-Optics Society (LEOS – now
`
`known as the IEEE Photonics Society), following earlier service as a member of
`
`the LEOS Board of Governors, and as the Vice-President for Technical Affairs.
`
`12.
`
`From 1996 through 1999, I was the James F. Towey University
`
`Scholar at the University of Illinois. I received the LEOS Distinguished Service
`
`Award, was awarded the IEEE Third Millennium Medal in 2000 and was named a
`
`LEOS Distinguished Lecturer for 2003-2005. In 2005, I received the IEEE/LEOS
`
`Aron Kressel Award. I was awarded the C.E.K. Mees Medal of the Optical
`
`Society of America in 2007, and was the recipient of the Fulbright-Israel
`
`Distinguished Chair in the Natural Sciences and Engineering for 2007-2008.
`
`13.
`
`I am a co-founder of Eden Park Illumination (2007) and EP
`
`Purification (2010).
`
`14.
`
`In 2014, I was elected into the National Academy of Engineering, and
`
`the National Academy of Inventors.
`
`15.
`
`I am a named inventor on over ninety (90) United States and
`
`international patents and have patent applications pending both in the United States
`
`and abroad.
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`5
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`

`
`A copy of my curriculum vitae is attached as Appendix A.
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`16.
`
`17.
`
`8,969,841 (“the ’841 patent,” Ex. 1301). I have been informed that the ’841 patent
`
`claims priority, among others, to U.S. Application No. 11/395,523, filed on March
`
`31, 2006, now U.S. Patent No. 7,435,982 (the “’982 patent”).
`
`18.
`
`I have also reviewed the following references, all of which I
`
`understand to be prior art to the ’841 patent:
`
` French Patent Publication No. FR2554302A1, published May 3, 1985
`(“Gärtner,” Ex. 1304), with English Translation, and is prior art to the
`ʼ841 patent under 35 U.S.C. § 102(b).
`
` Int’l Publication WO-2004097520, published November 11, 2004
`(“Mourou,” Ex. 1314); prior art to the ʼ841 patent under 35 U.S.C. §
`102(b).
`
` Japanese Patent Publication No. 2006010675A, published January 12,
`2006 (“Kensuke,” Ex. 1305), with English Translation, and is prior art
`to the ʼ841 patent under 35 U.S.C. §§ 102(a) and 102(b).
`
` William T. Silfvast, Laser Fundamentals, 2d ed., published in 2004
`(“Silfvast,” Ex. 1306); prior art to the ʼ841 patent under 35 U.S.C. §
`102(b).
`
`19.
`
`I am being compensated at my normal consulting rate for my work.
`
`20. My compensation is not dependent on and in no way affects the
`
`
`
`
`
`
`
`substance of my statements in this Declaration.
`
`21.
`
`I have no financial interest in the Petitioners. I similarly have no
`
`financial interest in the ’841 patent.
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`6
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`
`II. LEGAL PRINCIPLES
`22.
`I have been informed that a claim is invalid as anticipated under 35
`
`U.S.C. § 102(a) if “the invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a foreign country, before
`
`the invention thereof by the applicant for patent.” I have also been informed that a
`
`claim is invalid as anticipated under 35 U.S.C. § 102(b) if “the invention was
`
`patented or described in a printed publication in this or a foreign country or in
`
`public use or on sale in this country, more than one year prior to the date of the
`
`application for patent in the United States.” Further I have been informed that a
`
`claim is invalid as anticipated under 35 U.S.C. § 102(e) if “the invention was
`
`described in … an application for patent, published under section 122(b), by
`
`another filed in the United States before the invention by the applicant for patent
`
`….” It is my understanding that for a claim to be anticipated, all of the limitations
`
`must be present in a single prior art reference, either expressly or inherently.
`
`23.
`
`I have been informed that a claim is invalid as obvious under 35
`
`U.S.C. § 103(a):
`
`
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`7
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have
`been obvious at the time the invention was made to a person having
`ordinary skill in the art to which [the] subject matter pertains.
`
`24.
`
`I understand that a claimed invention would have been obvious, and
`
`therefore not patentable, if the subject matter claimed would have been considered
`
`obvious to a person of ordinary skill in the art at the time that the invention was
`
`made. I understand that when there are known elements that perform in known
`
`ways and produce predictable results, the combination of those elements is likely
`
`obvious. Further, I understand that when there is a predictable variation and a
`
`person would see the benefit of making that variation, implementing that
`
`predictable variation is likely not patentable. I have also been informed that
`
`obviousness does not require absolute predictability of success, but that what does
`
`matter is whether the prior art gives direction as to what parameters are critical and
`
`which of many possible choices may be successful.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`25.
`A person of ordinary skill in the art at the time of the alleged
`
`invention of the ’841 patent would have had a Ph.D. in physics, electrical
`
`engineering, or an equivalent field and 2-4 years of work experience with lasers
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`8
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`

`
`and plasma, or a master’s degree in physics, electrical engineering, or an
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`equivalent field and 4-5 years of work experience with lasers and plasmas.
`
`26.
`
`The ’841 patent states that the alleged “invention relates to methods
`
`and apparatus for providing a laser-driven light source.” (’841 patent, 1:26-27 (Ex.
`
`1301).) Since a laser is fundamental to maintaining the plasma in all laser-driven
`
`light sources (including the light source in the ’841 patent), it is reasonable to
`
`expect that a person skilled in the art would have experience with, and an
`
`understanding of, both plasmas and lasers.
`
`27.
`
`In accord with the definition of the skilled artisan suggested above,
`
`my graduate students in 2005 (as well as before that time and since) normally took
`
`graduate level courses in both lasers and plasma physics, and routinely worked
`
`with (and were instructed in the laboratory about the properties of) plasmas, many
`
`of which were produced with lasers. Lasers sufficiently powerful to generate
`
`and/or sustain a plasma are a potential safety hazard and must be approached with
`
`skill. Fundamental safety concerns require those in the field of systems
`
`incorporating plasmas and lasers to understand both from a fundamental
`
`perspective and to acquire experience in working with both. Furthermore, because
`
`the properties of individual lasers determine if they are suitable for driving an
`
`efficient plasma light source, one skilled in the art must have an understanding of
`
`the state of the art in laser physics and technology, as well as the parameters and
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`9
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`characteristics of the most efficient and powerful systems. By the time my graduate
`
`students obtained their Ph.D. degrees, therefore, they would have had at least 4-5
`
`years of experience with both plasmas and lasers. Thus, the problem and solution
`
`to which the ’841 patent is directed, and the experience of those who typically
`
`would work on developing laser-generated plasmas, demonstrate that a person of
`
`ordinary skill would have experience with both lasers and plasmas.
`
`IV. OVERVIEW OF THE ’841 PATENT
`28.
`The ’841 patent family is directed to a laser-sustained plasma light
`
`source for use in, for example, testing and inspection for semiconductor
`
`manufacturing. As depicted in Fig. 1 below, the light source includes a sealed
`
`pressurized chamber containing gas (green), an ignition source for ionizing the gas
`
`(blue), a laser providing energy to the plasma (red), plasma-generated light, and the
`
`chamber having a transparent region to allow the plasma-generated light to exit.
`
`(’841 patent, claim 10 (Ex. 1301).) According to the ’841 patent, prior art light
`
`sources relied upon electrodes to both generate and sustain the plasma, which
`
`resulted in wear and contamination. (’841 patent, 1:42-58 (Ex. 1301).) Thus, an
`
`alleged need arose for a way to sustain plasma without relying on an electrical
`
`discharge from electrodes. (’841 patent, 1:59-63 (Ex. 1301).)
`
`10
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`

`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`
`ʼ841 Patent, Figure 1 (Ex. 1301)
`
`
`
`29.
`
`The alleged invention of the patent family involves using a laser to
`
`sustain the plasma for a light source. The ’841 continuation adds claims that
`
`require that the laser operate at a wavelength of up to about 2000 nm.
`
`30.
`
`As discussed below, there was nothing new in 2006 about sustaining a
`
`plasma with a laser to produce light. Multiple prior art references, including
`
`Gärtner, Mourou, and Kensuke disclosed laser-sustained plasma light sources.
`
`Moreover, there was nothing new about providing energy to a plasma with a laser
`
`operating at a wavelength of up to 2000 nm. As the patent admits, efficient, cost
`
`effective, and high power lasers in the claimed wavelength range were “recently
`
`available.” (’841 patent, 16:6-14 (emphasis added) (Ex. 1301).) Mourou and
`
`Kensuke provide two examples of systems that provide energy to a plasma with a
`
`laser operating at a wavelength of up to 2000 nm, while Gärtner provides an
`
`example of a system that maintains a plasma. Silfvast shows that the laser used by
`
`11
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`Mourou and Kensuke could be operated as a continuous wave laser. It would have
`
`been obvious to combine Mourou and Silfvast or Kensuke and Silfvast with
`
`Gärtner to arrive at the claimed invention.
`
`A.
`
`Summary of the Prosecution History
`
`31.
`
`The ’841 patent (Ex. 1301) issued from U.S. Patent Appl. No.
`
`14/510,959, filed on October 9, 2014. The ’841 patent is a continuation of the ’000
`
`patent, which is a continuation of the ’138 patent, which is a continuation in part of
`
`U.S. Patent Appl. No. 12/166,918 (now U.S. Patent No. 7,989,786), which is a
`
`continuation in part of the ’455 patent, which is a continuation in part of the ’982
`
`patent, filed March 31, 2006. (See Chart of Related Patents (Ex. 1302).) As
`
`explained below, the Examiner allowed the claims of the ʼ841 patent only after the
`
`applicant amended the claims to include a limitation requiring the laser wavelength
`
`to be up to about 2000 nm.
`
`32.
`
`On November 12, 2014, the Examiner rejected the claims in light of
`
`various prior art references. (Office Action dated Nov. 12, 2014 (Ex. 1308).) The
`
`claims were primarily rejected based on U.S. 4,780,608 (“Cross”) and U.S.
`
`6,541,924 (“Kane”). The Office Action asserted that “Cross discloses a light
`
`source comprising a pressurized chamber in which a laser-sustained plasma emits
`
`[] light,” and that Kane discloses an ultraviolet light source comprising a
`
`pressurized chamber and an electrode ignition source. (Id. at 2-4.)
`
`12
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`

`
`On December 17, 2014, the applicant responded by amending the
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`33.
`
`claims to include features such as a “sealed” chamber, a pressure above 10 atm,
`
`wavelength ranges for the laser and the light produced by the plasma, and a
`
`chamber that has a transparent region. (Applicant’s Amendment and Response
`
`dated Dec. 17, 2014 at 3 (Ex. 1309).) The applicant also added dependent claims
`
`further specifying the pressure and properties of the laser and plasma. The
`
`applicant argued that the amended claims with the additional limitations were
`
`distinct from the prior art because allegedly “none of the references of record
`
`produce a plasma generated light having output wavelengths greater than 50 nm.”1
`
`(Id. at 11.)
`
`34.
`
`On January 22, 2015, the newly amended claims were allowed.
`
`(Notice of Allowability dated Jan. 22, 2015 at 2 (Ex. 1310).) With respect to
`
`application claims 1, 15 (now claim 10), and 20, the Examiner introduced U.S.
`
`Publication No. 2006/0152128 (“Manning”) but noted that Manning did not
`
`disclose the use of a laser with a wavelength in the 700-2000 nm interval to create
`
`
`1 Patent Owner was, in fact, mistaken. For example, Kane discloses a “plasma
`
`lamp” that is “capable of providing a source of high-peak-power incoherent [UV]
`
`light (80-350 nm, more typically 11-320 nm).” (U.S. Patent No. 6,541,924
`
`(“Kane”) at 7:53-59 (Ex. 1318).)
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`13
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`a plasma that produced a light with a wavelength greater than 50 nm. (Id.)
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`Regarding Cross, the Examiner stated that in addition to not disclosing a laser with
`
`a wavelength from 700 to 2000 nm, the reference did not disclose a transparent
`
`region of the chamber and was concerned with producing ions instead of light
`
`produced by a plasma. (Id. at 2-3.) The Examiner also stated that it would not
`
`have been obvious to combine Manning and Cross because “they belong to
`
`different fields of endeavor; namely, Manning uses a plasma to generate light,
`
`while Cross uses a plasma to generate ions.” (Id. at 3.)
`
`35.
`
`The Examiner, however, did not consider Gärtner or Mourou or
`
`Silfvast, nor was the Examiner provided a complete English translation of
`
`Kensuke.2 As discussed below, (i) Gärtner in view of Mourou and Silfvast and (ii)
`
`
`2 Kensuke (JP 2006-10675) was included in an Information Disclosure Statement
`
`filed by applicant on October 9, 2014. However, applicant only submitted an
`
`English translation of the abstract, and Kensuke was not used in any of the
`
`Examiner’s rejections. Notably, as described further below, Kensuke discloses the
`
`use of a laser with a wavelength of less than 2000 nm to create a plasma that
`
`produces a light with a wavelength greater than 50 nm, but the abstract does not
`
`provide this disclosure. (See infra at section VII.B.1.d).)
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`14
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`Gärtner in view of Kensuke and Silfvast each renders the challenged claims
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`unpatentable as obvious in view of the combinations below.
`
`36.
`
`The independent claim features identified in the Notice of
`
`Allowability as missing from the prior art are present in the prior art used in the
`
`proposed grounds of unpatentability, as the Board recognized in its Decision on
`
`Institution in an IPR directed to the same patent. (Case No. IPR2015-01362 at 13-
`
`14 (PTAB Nov. 30, 2015) (Paper 12) (instituting on claims including independent
`
`claim 1).)
`
`V. CLAIM CONSTRUCTION
`37.
`I have applied the “broadest reasonable interpretation” standard in
`
`proposing the claim constructions below. However, based on my reading of the
`
`’841 patent’s specification and the ordinary meanings of the claim terms, the prior
`
`art teaches each claim limitation under any reasonable interpretation of the claim
`
`terms. My analysis is not dependent on application of the “broadest reasonable
`
`interpretation” standard.
`
`A.
`38.
`
`“Light source”
`
` The term “light source” is recited in all challenged claims. “Light
`
`source” should be construed to mean “a source of electromagnetic radiation in the
`
`ultraviolet (“UV”), extreme UV, vacuum UV, visible, near-infrared, middle
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`15
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`

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`infrared, or far infrared regions of the spectrum, having wavelengths within the
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`range of 10 nm to 1,000 μm.”
`
`39.
`
`The ordinary and customary meaning of “light source”3 is a source of
`
`electromagnetic radiation in the extreme ultraviolet (10 nm to 100 nm), vacuum
`
`ultraviolet (100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible (400 to 700
`
`nm), near-infrared (700 nm to 1,000 nm (1µm)), middle infrared (1 µm to 10 µm),
`
`or far infrared (10 µm to 1,000 µm) regions of the spectrum. (See, e.g., William T.
`
`Silfvast, Laser Fundamentals at 4 (2d Ed., 2004) (Ex. 1306).) The Patent Owner
`
`publishes a data sheet which is consistent with the ordinary and customary
`
`meaning in considering EUV [Extreme Ultraviolet] to be within the meaning of
`
`“light source.” (See, e.g., Energetiq EQ-10M Data Sheet at 2 (describing
`
`Energetiq’s EQ-10M product operating at 13.5 nm as an “EUV Light Source”)
`
`(Ex. 1307).)
`
`
`3 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’841 patent make clear that the
`
`broader meaning is intended because ultraviolet light has a wavelength shorter than
`
`that of visible light. (See, e.g., ’841 patent, 7:52; 17:13; 18:43; 20:32-33; 23:29;
`
`26:33) (Ex. 1301).)
`
`16
`
`

`
`The ’841 patent does not provide a definition of the term “light
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`40.
`
`source” and uses the term consistent with the ordinary and customary meaning of
`
`the term. The ’841 patent states that parameters such as the wavelength of the light
`
`from a light source “vary depending upon the application.” (’841 patent, 1:39-41
`
`(Ex. 1301).) The specification describes “ultraviolet light” as an example of the
`
`type of light that can be generated: “emitted light 136 (e.g., at least one or more
`
`wavelengths of ultraviolet light).” (’841 patent, 18:34-36 (Ex. 1301); see also id.
`
`at 17:12-14 (discussing the ultraviolet light 136 generated by the plasma 132 of the
`
`light source 100).)
`
`41.
`
`Therefore, the term “light source” should be construed to mean “a
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`source of electromagnetic radiation in the ultraviolet (“UV”), extreme UV, vacuum
`
`UV, visible, near-infrared, middle infrared, or far infrared regions of the spectrum,
`
`having wavelengths within the range of 10 nm to 1,000 μm.”4
`
`
`4 The particular construction for the claim term “light source” was adopted by the
`
`Board in the Decision granting Institution of Inter Partes Review for claims 1-3
`
`and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper 12).) This
`
`construction is equivalent to the Petitioners’ prior proposed construction for the
`
`term “light source” in the prior Petitions for the ’841 patent and other patents in the
`
`patent family.
`
`17
`
`

`
`“Laser Driven Light Source”
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`The term “laser driven light source” is recited in all challenged claims.
`
`B.
`42.
`
`The term “laser driven light source” should be construed to mean a “light source
`
`having a laser applying energy to generate light.”
`
`43.
`
`The term “laser driven light source” is not a term of art. As used in
`
`the ’841 patent, a person of ordinary skill in the art would have understood the
`
`term “laser driven light source” to refer to light sources in which a laser supplies
`
`energy to a plasma for the purpose of generating light. (E.g., ’841 patent, 14:45-
`
`50, 63-65 (“The light source 100 also includes at least one laser source 104 that
`
`generates a laser beam that is provided to the plasma 132 located in the chamber
`
`128 to initiate and/or sustain the high brightness light 136. . . . It is also desirable
`
`for the laser source 104 to drive and/or sustain the plasma with a high power laser
`
`beam.”) (Ex. 1301).) Therefore, the term “laser driven light source” should be
`
`construed to mean a “light source having a laser applying energy to generate
`
`light.”5
`
`
`5 The particular construction for the claim term “laser driven light source” was
`
`adopted by the Board in the Decision granting Institution of Inter Partes Review
`
`for claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015)
`
`(Paper 12).) This construction is equivalent to the Petitioners’ prior proposed
`
`18
`
`

`
`“Light Bulb”
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`The term “light bulb” should be construed to mean “a light emitting
`
`C.
`44.
`
`portion of a light source.” This construction is consistent with the use of the term
`
`“bulb” in the specification (the term “light bulb” appears only in the claims) and
`
`with the limitations in independent claim 10, on which the challenged claims
`
`depend, that relate to the “light bulb.” (See, e.g., ’841 patent, 20:43-54 (the light
`
`source includes a sealed chamber, such as a sealed bulb, containing an ionizable
`
`medium that is energized to create a plasma that emits light), 26:52-64 (similar),
`
`49:22-25 (light bulb defines a sealed pressurized chamber containing a gas), 49:31-
`
`35 (chamber includes a region allowing the plasma-generated light to exit the bulb)
`
`(Ex. 1301).) In the context of the ’841 patent, a person of ordinary skill in the art
`
`would have understood the term “light bulb” to mean “a light emitting portion of a
`
`light source.” Therefore, the term “light bulb” should be construed to mean “a
`
`light emitting portion of a light source.”
`
`D.
`45.
`
`“Substantially continuous laser”
`
`The term “substantially continuous laser” is recited in independent
`
`claim 10, from which the challenged claims depend. The term “substantially
`
`
`construction for the term “laser driven light source” in the prior Petitions for the
`
`’841 patent and other patents in the patent family.
`
`19
`
`

`
`continuous laser” should be construed to encompass a continuous wave laser, a
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`high pulse rate laser, and a laser that provides substantially continuous laser
`
`energy,” as the Board construed the term in its Decision granting Institution of
`
`Inter Partes Review for claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB
`
`Nov. 30, 2015) (Paper 12).)
`
`46.
`
`The specification of the ’841 patent indicates that a substantially
`
`continuous laser can be a continuous wave laser, a high pulse rate laser, or a laser
`
`that provides substantially continuous laser energy. (’841 patent, 15:60-62 (high
`
`pulse rate laser or continuous wave laser); 16:15-18 (“high pulse rate laser source
`
`that provides substantially continuous laser energy”); 4:53-55 (a “continuous-wave
`
`laser emits radiation continuously or substantially continuously rather than in short
`
`bursts, as in a pulsed laser”) (Ex. 1301).)
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`47.
`The challenged claims recite and claim features that were known in
`
`the art prior to the earliest priority date, and are obvious in view of the prior art.
`
`A. Laser Sustained Plasma Light Sources Were Known Long Before
`the Priority Date of the ’841 Patent
`